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Patent Prosecution: Law, Practice, and Procedure, Tenth Edition

Published by Bloomberg BNA
By Irah H. Donner
Publication Date: 2018
7,356+ pages

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Price: $655 + S&H
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The new 10th Edition covers the enormous changes brought on by the Leahy-Smith America Invents Act and includes searchable electronic appendices with a comprehensive, cumulative case digest. This is Irah Donner’s “magnum opus” for patent attorneys and IP professionals – a must-have, all-in-one comprehensive reference. 

In the new 10th Edition of Patent Prosecution: Law, Practice, and Procedure, you’ll find in-depth coverage on significant changes in patent law resulting from decisions of the Supreme Court, the Federal Circuit, and the Patent Trial Appeal Board. This new edition places new substantive discussions in context with existing patent laws and regulations. You’ll also save valuable time and precious resources with the in-depth analysis of prosecution rules from the U.S. Patent and Trademark Office.


“To say that Patent Prosecution is a comprehensive resource both for experienced patent practitioners, as well as new aspirants, is an understatement.”

David J. Kappos,
Partner, Cravath, Swaine & Moore LLP
Former Under Secretary of Commerce and Director of the United States Patent and Trademark Office

Patent Prosecution: Law, Practice, and Procedure, Tenth Edition is the only resource that gives you an element-by-element analysis of patent law issues that trigger rejections by the USPTO. Utilizing years of research and practical experience, the author provides you with proven response strategies.

This 10th Edition is updated to analyze and highlight the significance of recent Supreme Court cases on patent issues such as the review standard for Inter Partes Review (IPR) and a more flexible approach to award enhanced damages. It also highlights Federal Circuit decisions on patent issues, including:

  • Cases examining procedures under the America Invents Act
  • The on sale bar
  • Disavowal of claim scope through disparagement
  • Cases on eligible subject matter and obviousness
  • PTAB rules and the “broadest reasonable interpretation” standard

The 10th Edition Includes a Searchable and Cummulative Case Digest

Patent Prosecution: Law, Practice, and Procedure, 10th Edition includes accompanying searchable electronic appendices and a comprehensive Cumulative Case Digest with an extensive compilation of precedential language, organized by specific issue, in favor of patentability – giving you fast access to a powerful tool for crafting claims and ensuring patent prosecution affords optimal protection. In short, this 6,700-page reference is the one resource all patent practitioners need to ensure a comprehensive understanding of the latest cases, USPTO rules and procedures, and precedents.

The 2018 Supplement adds discussion of:

  • Supreme Court decisions in Matal v. Tam, ruling that the federal government’s ban on offensive-trademark registrations violated the First Amendment; Star Athletica, LLC v. Varsity Brands, Inc., holding that decorative features of cheerleader uniforms were copyrightable; SCA Hygiene Products AB v. First Quality Baby Products, LLC, determining that the equitable defense of laches cannot be used as a defense to claims for infringement occurring during the six year statute of limitations period; and Samsung Electronics Co., Ltd. v. Apple Inc., concluding that for a multicomponent product, the relevant “article of manufacture” for damages under 35 U.S.C. §289 can be a component of that product, even though consumers could not purchase that component separately from the end product
  • Skedco, Inc. v. Strategic Operations, Inc., where the Federal Circuit held that claims are not generally limited to inventions looking like embodiments in the drawings
  • Aylus 2 Networks, Inc. v. Apple Inc., where the Federal Circuit held that statements made by a patent owner during inter partes review can support a finding of prosecution disclaimer and narrow the scope of the claims
  • Cardiaq Valve Technologies, Inc. v. Neovasc Inc., in which the Federal Circuit held the mere contribution of public knowledge, which could have been easily obtained by the named inventor, does not make one a co-inventor.
  • Several Federal Circuit cases on patent eligible subject matter, including Amdocs (Israel) Limited v. Openet Telecom, Inc., where the Federal Circuit held a system for monitoring activity on computer networks and creating records of it was patent eligible
  • Ex parte McAward, where in a precedential opinion, the Patent Trial and Appeal Board (Board) confirmed that for ex parte patent prosecution it will not use the U.S. Supreme Court’s Nautilus Inc. v. Biosig Instruments Inc.standard, but will determine that a claim is indefinite if it uses words or phrases that are unclear
  • In re Chudik, where the Federal Circuit held that a prior art reference that must be distorted from its obvious design does not anticipate a patent claim
  • In re: Van Os, where the Federal Circuit held that that it is not enough for the Patent Trial and Appeal Board (Board) to provide the conclusory statement that the claimed invention would have been “common sense” or “intuitive” as the reason to combine or modify the prior art
  • Skky, Inc. v. Mindgeek, S.A.R.L., where the Federal Circuit held that the claim phrase “wireless device means” was not a means-plus-function element when the phrase signified structure, there was no function recited in connection with this phrase, and the claim was in method format
  • Several Federal Circuit decisions interpreting the America Invents act (AIA) statute including In re Aqua Products Inc., where the en banc Federal Circuit, in a 6-5 vote rejected the Board placing the burden of persuasion on the patent owner for substitute claims
  • Rembrandt Wireless Technologies LP v. Samsung Electronics Co., Ltd., where the Federal Circuit held that a disclaimer of a claim cannot serve to retroactively dissolve the marking requirement for a patentee to collect pre-notice damages under 35 U.S.C. § 287(a).
  • Amgen Inc. v. Sanofi, Aventisub LLC, where the Federal Circuit held that although enablement of a claimed invention is evaluated at the priority date, post-priority-date evidence may be relevant to determine enablement and written description at the time of the priority date
  • Guidelines describing how the Patent Office will handle ex parte reviews and reexaminations that are remanded back to the Board from the Federal Circuit
  • Perfect Surgical Techniques v. Olympus America, Inc., where the Federal Circuit clarified the requirements for diligence for patent applications filed before March 16, 2013 under the first-to-invent system. Specifically, the court held that to show diligence the inventor need only prove there was reasonably continuous diligence

The accompanying searchable online appendix updated for the 2018 Supplement offers a comprehensive Cumulative Case Digest with an extensive compilation of precedential language, organized by specific issue, in favor of patentability.

About the Publisher and Author

Technology Transfer Tactics is proud to partner with Bloomberg BNA to bring our customers access to this comprehensive and authoritative resource. All Bloomberg BNA are written by respected experts with extensive experience in patent law and IP licensing. These renowned authors draw from their wealth of professional expertise and in-depth research to deliver the most highly regarded editorial quality in the industry.

The author of Patent Prosecution: Law, Practice, and Procedure is Irah H. Donner, a partner in the Intellectual Property department of Manatt, Phelps & Phillips, LLP, New York, NY. He concentrates on patent prosecution, technology audits, intellectual property transactional due diligence, and transactional work, including licensing and development agreements and litigation support.

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